FEDERAL COURT OF AUSTRALIA

MGV Pty Ltd v Phonographic Performance Company of Australia Limited [2000] A Copy T 8

COPYRIGHT TRIBUNAL – power to order costs – considerations governing the exercise of the Tribunal’s discretion – public interest in bringing litigation to an end and encouragement of realism as factors tending to justify no order as to costs upon a discontinuance.

Copyright Act 1968 (Cth), s 174

GS Technology v Secretary, Copyright Tribunal (1999) 44 IPR 397 referred to

Re Application by Seven Dimensions Pty Ltd (1996) 35 IPR 1 followed

Allanson v State of Queensland (unreported, 4 June 1998, Burchett P) referred to

MGV PTY LTD v PHONOGRAPHIC PERFORMANCE COMPANY OF AUSTRALIA LIMITED

CT 1 of 1998

BURCHETT P

4 OCTOBER 2000

SYDNEY

COMMONWEALTH OF AUSTRALIA

COPYRIGHT ACT 1968

REASONS FOR DECISION

BURCHETT P:

1                     In this matter a proceeding was commenced in the Tribunal.  It was challenged on the question of the capacity of the applicant to bring the proceeding; as a result of that challenge, and of a further challenge, the proceeding was amended on a couple of occasions and a change of parties occurred.  Now Mr Rizos, who is the directing mind in the proceeding, has filed a document discontinuing it.  That the proceeding should be discontinued by virtue of the filing of the document is expressly not disputed, but the respondent seeks an order for its costs.

2                     It should be made clear that the matter has not got very far, but at the same time there have been a number of directions hearings and the costs certainly would, if taxed, be likely to amount to some four or five thousand dollars or, according to the respondent, significantly more.  I am not in a position to estimate just how much more the costs might be.

3                     The power of the Tribunal with respect to costs is conferred by s 174 of the Copyright Act 1968 (Cth),and that power is undoubtedly discretionary:  GS Technology v Secretary, Copyright Tribunal (1999) 44 IPR 397 at 399, per Cooper J.  In Re Application by Seven Dimensions Pty Ltd (1996) 35 IPR 1, the then President of the Tribunal, Sheppard J, said (at 21):

“It has not been the practice of the tribunal to order costs to successful parties as a matter of course.  The view has been taken that orders for costs will only be made in cases where there are circumstances which justify the making of the order.  Otherwise costs are borne by the parties who appear before the tribunal themselves.  The reason for this is that cases before the tribunal often involve matters of doubt and difficulty between substantial parties who are owners or substantial users of copyright material.  These cases often involve parties who are in an ongoing relationship who are in genuine dispute about the amount or amounts to be paid for the use of copyright material.  In those circumstances, it is thought fair, particularly if parties have acted in good faith, that there should be no order for the payment by one party to another party of costs incurred before the tribunal.”

To the matters that Sheppard P mentioned, should be added that the decision of the Tribunal often affects wider interests than those arising between the immediate parties to the particular proceeding.  Nevertheless, the Tribunal has a discretion to order costs, and may consider it appropriate to do so where, for example, a party persists in maintaining a hopeless case - and as to that I have been referred to my own decision in Allanson v State of Queensland (unreported, 4 June 1998, Burchett P) - or conducts a proceeding in a manner that unnecessarily increases the costs of other parties.

4                     But in the present case Mr Rizos, far from doing either of those things, has decided to discontinue the proceeding.  A realistic approach to the problems of a matter in the Tribunal is to be encouraged, not discouraged by a costs penalty.  As it is often put, usually in Latin, there is a public interest in bringing litigation to an end.  In all the circumstances, I consider that I should exercise my discretion by making no order as to costs.  Mr Rizos should, however, not be misled by this success.  Litigation does not always have such a happy ending.

5                     I dismiss the proceeding, but I make no order as to costs.

Associate to the President:

Dated:              6 October 2000